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February 2, 2004

Shameless rights grab by Marvel and DCPosted by Teresa at 02:25 PM *

According to this story (which I found in Boing Boing), Marvel and DC are now trying to push the idea that they’re joint owners of the term super hero:

Dan Taylor, creator of the critically acclaimed Super Hero Happy Hour comic published by GeekPunk, has announced that the name of his series has had to change, due to Marvel and DC co-owning the term “Super Hero.” It’s just Hero Happy Hour from here on out. …

GeekPunk is announcing that their flagship comic book title featuring superheroes patronizing their favorite bar & grill during their off-hours will now be entitled Hero Happy Hour beginning with the fifth issue of the ongoing series.
According to creator Dan Taylor, “The decision to change the title was brought upon by the fact that we received a letter from the trademark counsel to ‘the two big comic book companies’ claiming that they are the joint owners of the trademark ‘SUPER HEROES’ and variations thereof.”

I can’t see it. The term super hero, a.k.a. super-hero or superhero, has been around for a long time. If DC ever owned it, you’d think we’d have heard about it before now. Marvel came along after DC. If they had a claim on the word, surely they’d have said something about DC’s use of it; and vice-versa. Also, it’s my impression that for a long time there, DC barely acknowledged Marvel’s existence. How could they have come into joint possession of such a basic term?

A further problem is that Marvel and DC haven’t been the only comics publishers in existence. There’ve been lots of others. I don’t recall ever hearing it mentioned that other companies weren’t allowed to say super hero.

At this point, superhero comics have been around for quite a while. The concept of the superhero is part of the common intellectual furniture of our culture. Just now, when I googled on superhero, the first hit I got was the Washington Post using the word in a headline. Not until today have I ever heard it suggested that one corporation or another owned the term.

So, the next question is whether there’s anything Marvel and DC could have done that would legitimately give them joint ownership of an existing, commonly used piece of our vocabulary. I don’t think there is, but I think they’re pretending they’ve done it. Perhaps they’ve filed some sort of claim on it, and are now going to try to force Dark Horse and other comics publishers to stop using the single most recognizable piece of comics terminology in all of American pop culture.

If so, they’ve got their nerve.

I’m sorry to see that GeekPunk has knuckled under. Maybe they just didn’t have the resources to pursue some extended legal action. But I hope no one else takes this seriously who isn’t physically or fiscally obliged to do so, because what it looks like to me is a land grab, pure and simple, and a piece of brazen effrontery.

That's... fascinating. And horrible. And more or less exactly what I'd expect from New Marvel, given how arrogantly they've been acting towards distributors, retailers, and organizations like Comic-Con International over the last few years.

That DC is apparently involved in this puts a bit of a twist on things, though. At least in my limited experience in the business, DC was generally above doing silly things like this-- or at least, their legal counsel was good enough to tell them when they didn't have a leg to stand on.

It'd be interesting to discover what's really going on here, and if all is as it seems on the surface.

They've been claiming it as a jointly-held trademark since at least the mid-80s (Champions, a superhero RPG, was forced to call itself "the SUPER role-playing game" due to threats of legal action, and the Marvel and DC RPGs include the copyright claim).

I agree with you that the claim is almost certainly unenforcable, but it's not a recent one.

This reminds me of the folks a couple of years back who filed a trademark on the word "fandom" so that no one else would be able to use it in a title or company or convention or website without permission; then they started going after people daring to use the word. And they would have gotten away with it, too, if it weren't for us darned kids.

Pretty much, Carol. It's obviously a bogus trademark - to put it mildly, there was a lot of prior art by 1981. But it's been exercised as in the case that (quite rightly) bugs Our Hostess before. Tom Galloway would no doubt know more...

Going back to prior discussions about trademarks--don't you have to use trademarks as a descriptive adjective? So they'd have to use it as Superhero™ comics....or some such bullshit. Which is kind of silly, seeing as we're describing an entire genre. It'd be almost as if Harlequin--to use a random example--declared that nobody else could use the term "romance" to describe their literature.

I have no respect for Marvel these days and I'm disappointed in DC for getting in on this. Honestly, this is the first I've heard of them enforcing it--or trying to, and I think they have a poor case for trademark infringement. (Why do these patents/trademarks keep slipping through? Why?)

It's a real bugger though. Wonder what this will do to all the other publishers of "superhero" comics. I hope it goes the way of Bayer's aspirin and is ruled to be a cultural staple.

Greece sues Major League Baseball: Says that each use of the word "Homer" should cost Royalty $$$?

Inventor of Steam Engine Sues Marvel: Says "My name was Hero before You Diluted my Brandname"?

The ego-police prevent me from saying how and when I was involved with Stan Lee's ex-partner, you know, the one in jail for a $150 million stock fraud who wants to plea bargain by spilling the beans on how he ran the big L.A. fundraiser for Hillary Clinton... Dude's name is Peter Paul. As in "stealing from Peter to pay Paul", or half-the-Beatles-are-better-than-none.

I managed a comic store for about 8 years and it was common knowledge among us nerds that "super-hero" was a trademark jointly held by Marvel and DC.

I read the post at boing boing too and I guess I'm a little suprised that this isn't a commonly-held factoid. But then, I'm a little suprised that most people can't tell you the Silver Surfer's origin story. --snorts, pushes glasses up on nose, laughs at unnaturally high volume--

What are you guys waiting for, Teresa? Write up a sufficiently broad description that skids past prior art but envelopes anything that could come after, and just wair for the licensing fees roll on in!

--This joint trademark of "superhero" is one of those things that I've always known in the pop culture cellar of my brain; I think I heard about it when the Wild Card books were coming out--it's (one of) the reason(s) why Martin & co. settled on "metahuman" as their term of art, if I recall correctly. What's funny, of course, is that, in a bid to shed their fusty capecapades and get with the cool kids, both DC and Marvel have been using "metahuman" rather than "superhero" to refer to those differently powered. --Not that Martin & co. "invented" the term metahuman. Nor do I have anything remotely resembling proof that DC and Marvel or their various agents and freelancers separately or jointly picked up said term from the Wild Cards books. But the juxtaposition nonetheless amuses.

Right: it always came up whenever someone mentioned how TSR tried to trademark Nazi. Someone would scoff; someone else would point out how DC and Marvel jointly claimed ownership of "superhero." --"Ubermenschen Happy Hour," anyone?

(So why is it, he asked, that now that Preview is mandatory, one no longer proofs one's posts quite so assiduously? This one, at any rate. --To milk the maximum amount of humor from the above, replace "wair for" with "wait for." Also, Nazi should probably be in quotes--for the hobgoblin's sake, if nothing else.)

I dimly recall Manga Video UK trying to pull the same stunt in Britain, only with manga instead of superhero. (They managed to pull off the conflation of "anime" and "manga," though, resulting in a sort of Kleenex effect until Animatrix forced a correction in high street shop category signage. But I don't think they managed to get the trademark.)

I'm not a lawyer, but I would have thought that if the Biro brand name can become generic through extensive use, then "super hero" (a rational juxtaposition of non-proprietary words) should be considered public domain by now.

If Marvel and DC succeed
in owning the words we all read
they should be embarking
quite soon on trademarking
their hero, known only as "Greed".

Perhaps the term "super hero" should be struck from our language completely. It's a discriminatory concept that encourages ideas of superiority of one person over others.

PC has begun a new thrust:
"Superlative names are unjust!"
Now Differently Enabled
Man, miffed and mislabeled,
has hung up his cape in disgust.

My suspicion is that if anyone wanted to challenge it DC and Marvel would probably have to admit it was unenforceable, mostly because it's not enforced. There's no Marvel/DC style sheet that insists that whenever the word Superhero or Super Hero is used it's followed by a Trade Mark symbol; no-one at Marvel or DC has the job of writing letters to newspapers who use the term "superhero" explaining that as a trademark it should be "Superhero". Furthermore, DC and Marvel have pretty obviously let it lapse: they don't publish SuperHero TM comics or anything like that, which would seem at first glance like an abandoned trademark to me...

I would love someone to challenge that one. That's me speaking as me, mind you, not as a member of the board of the CBLDF.

I can't see any way in which the Superman-Fawcett lawsuit is similar to Marvel and DC claiming joint ownership on the trademark "super-hero".

For one thing, the Fawcett suit was a copyright claim; the "super-hero" question is trademark. They really are different things, with different implications.

Second, as far as I know, neither Marvel nor DC has ever actually pressed suit over "super-hero". I, personally, think they'd have about equal chances of winning or losing, on wildly different grounds.

Third, National Periodicals had a smoking gun in their lawsuit against Fawcett, which is why they won. Manly Wade Wellman, who wrote some Captain Marvel stories, testified that his editor at Fawcett handed him a stack of Superman comics and said, "Write something like these."

Kevin, I know the difference between copyright and trademark (hence the "on different grounds").

The similarity is claiming ownership something we see as generic - in the Fawcett case, superhero comics in general (in some sense, anyway), and in this case, the term super hero (in general and commercial use as far back as 1966, at least).

I'm not convinced that the Fawcett case was rightly decided[1]. Remember that at that time, the common understanding of comics gave us Werther and the Comics Code. Ultimately, DC won the case because there wasn't enough of a market for superhero comics for Fawcett to keep up the fight.

hazy memories of pop culture here, if I recall correctly and I probably don't DC first was trying to claim that they owned superhero to take Marvel out, Marvel wouldn't knuckle under so in 79 a compromise was reached that admitted a status quo existed, and allowed them to gang up on any possible interlopers.

This has nothing to do with a trademark issue, but any excuse to quote from the OED:

1917 ‘CONTACT’ Airman's Outings 211 The *super-heroes of the war. 1980 Dædalus Spring 119 The only people foolish enough to believe in fairy tales and superheroes (the last survivals in the mythology of atheism).

Bill Simmon: Of course I know the Silver Surfer's origin story, and the Scarlet Skier's, too. Now, understand that I'm asking this in an amused, cheerful, and totally non-critical spirit, but is there a geas on comics fans that forces them to begin answers to questions with some version of "Jeez, I can't believe you don't know that --"?

I don't particularly mind it; the fact is, I don't know, and they're doing me a favor by supplying the answer. It's just that they do that particular verbal riff more often than any other people I know -- excepting of course Gary Farber, who's supernaturally obliged to answer all questions that way.

Neil, given that legal challenges are inevitably lengthy, expensive, tedious, dispiriting, and in short a complete pain in the butt for anyone who'd planned to spend those years working on something else (which is why lawyers have the drop on the rest of us: this was what they planned to spend their time doing), the next best way to challenge the Marvel/DC claim is by ignoring it. Let them do all the work.

If I were putting out a publication whose use of the word they'd challenged, my inclination -- unless John Savage turns up here to tell me otherwise -- would be to respond to their first several rounds of letters with amiable disbelief and requests for explanations:

"Hello, is this a joke? Are you really Marvel/DC's legal counsel?""You're kidding. They actually think they own the term? When did this happen?""But everybody uses that word. Why am I being singled out?"

Et cetera. No need to fold your hand early if holding on to it isn't costing you anything. Disbelief does no damage to your position, and costs them billable hours; and there's always a chance they'll say something quotable. Besides, disbelief is the appropriate reaction.

As a kid in the 1960s, I used to read comic from ACG, which specialized in horror, fantasy and science fiction, and only introduced heroic figures late in the game (anyone remember Nemesis and Magicman?). They made a point of referring to folks like Superman and Spiderman as "costume heroes". I'm not sure if they were respecting a DC/Marvel trademark, or if they just preferred to use a phrase that sounded more mocking than "superhero".

Teresa, in the cases I semi-recall about Marvel and DC invoking their trademarks in the past, I suspect that the targets never really thought about what they could do in the way of challenge, or thought that it would make things worse once it got to court. Many of us lack confidence in the face of Big Authority speaking loudly and with great conviction, alas.

"... This Captain Marvel was published by M.F. Enterprises, a company so minor it could almost be called a fly-by-night. The character was created by Carl Burgos, who, a generation earlier, had given us the altogether better-received Human Torch. Credits were sparse, but when they appeared, they indicated the writer was Roger Elwood and the artist's only name was Francho. Carl Hubbell, a minor comics artist of the 1940s and '50s, wrote and inked at least one story...."

Lindsay Welsh, Second Sight, "lesbian superhero solves a mystery & defeats a fundamentalist homophobic plot. when she was turned into a superhero she gained amazing powers of all sorts ... including sexual... "

(1) "Prior art" is a term of art that has legal meaning only in the patent field. Those using that term are probably referring to earlier -descriptive- uses of the term SUPER HERO, which would very likely serve as evidence in a proceeding seeking to cancel this trademark. (/IP lawyer pedant)

(2) Neil Gaiman's point about enforceability is astute. If any defendant in a trademark infringement lawsuit could show that the trademark has not been adequately policed by the registrants, the registration could be canceled.

(3) Equally astute is the observation upthread that nobody's going to have the money to really fight this out with Marvel and DC, which is an unfortunate side effect of big companies having oodles of money.

"It would be like Tor claiming ownership of 'science fiction'." Would it? Was the term in wide usage before the trademark registration, or only since the advent of the direct market? And are we so bereft of imagination that we can't think of something else to call that genre of comics?

Elayne Riggs: Was the term in wide usage before the trademark registration, or only since the advent of the direct market? And are we so bereft of imagination that we can't think of something else to call that genre of comics?

I believe it was in general use well in advance of the direct market. And even if it wasn't: in reference to your second point, why should we have to rename the whole genre? It already has a perfectly good name, one used by people who probably couldn't name either of the two publishers who claim it. If we were to suddenly discover that Georgia Pacific had somehow landed a trademark on the word paper, would we need to invent something to replace that term as well?

The conversation here easily supports the argument that most folks consider Marvel & DC's trademark claim to be so much bunk. To me, the suggestion that we should just knuckle under to the Big Two and find something else to call the genre just validates their claim. Maybe nobody is currently interested in engaging in a money-burning contest with Time Warner, but that doesn't mean that the cultural lexicon has to surrender the field in the mean time.

My experience during my 8 years managing a comics store (1990-1997) was not unlike that of "Rob" form Nick Hornsby's _High Fidelity_--long hours with no customers and nothing to do but impress each other with our tremendous knowledge of comics, science fiction, music, philosophy, mountain dew, girls, movies, funyuns... pretty much all the important stuff. Oh, and deride customers for their bad taste in comics, we did a lot of that too.

I'm really scraping the walls of my brain, but I seem to recall that Marvel and DC would periodically--like every 7 or 8 years--come out with a book that used "Super hero" in the title. The talk around the store was that they did this to maintain their hold on the copyright, but I can't remember any actual titles or if our information was based upon anything more than conjecture.

Yes, Todd's hit the nail on the head with his Comics and the Law entry, thanks for the link Paul! "Super hero" can still be employed for academic and discussion purposes when talking about the subgenre itself, so I hope folks can now calm down about that aspect. :) The phrase just can't be used commercially in any comic book products if they're not from the Big Two.

The Village Voice has tried this same ploy with the word VOICE, which it claims to hold the trademark on. It goes after any publication using Voice in its name. There is some interesting information on how this is playing out and how trademarking of common words might or might not work at:
http://www.chillingeffects.org/domain/notice.cgi?NoticeID=445%3E

D------ M-----, a friend of mine in the Comics business writes (personal email) that:

"Superhero" is a generic term that's been in common usage for decades and which refers to a particular genre of comic book fiction. It's therefore not trademarkable. Since the late 1970s, Marvel and DC have been claiming
it as a "joint" trademark for the sole purpose of engaging in anti-competitive practices in ancillary markets.

I don't know whether or not the patent office has allowed registration of a broad claim to the mark. I very much doubt it, but the patent office has done some screwy things in the past. Certainly specific usages that incorporate the term "superhero" can be registered. Curiously, the fact that Marvel and DC attempt to make a broad claim of the term as a "joint" trademark is, in and of itself, prima facie evidence that it belongs to neither of them and therefore cannot be a valid mark.

Besides being effrontery, I wonder if it isn't of dubious legality. As far as I was aware, a word in common usage could not be trademarked, and the word 'superhero' is in common usage -- in fact, the word occurs in my Oxford English Reference Dictionary.

A better analogy might be if Apple and Dell tried to establish a joint trademark on "computer," or something like that. And then if Gateway tried to market a computer, they'd be told they have to call it something else.

But maybe that's not quite right either. After all, Marvel and DC aren't trying to trademark "comic." Though I'm sure they'd love to if they could.

On a slight tangent, but a better analogy: a few years ago Polo Magazine, a magazine about the game polo, was sued by Ralph Lauren for infringing on his trademark, the word "polo." RL won; the magazine was given 90 days to change its name, and folded rather than go through all the expense.

RL's case was helped by the fact that Polo Mag had recently undergone a redesign, to a new, glossy format involving nice photos of attractive people wearing polo clothes -- just like in Lauren ads. Lauren's trademark isn't just the word polo, but the image of poloness transmitted by that word.

The message is, if you're a superhero, don't wear brightly colored tights, and you'll be fine.

When Malibu set up the Ultraverse, they called their characters Ultra-heroes to avoid the trademark. When Dark Horse briefly went down that route, they called their's Mega-heroes.

I don't see Marvel and DC doing anything wrong here. They made the superheroes we know and love. When they filed in 1979, who else was publishing superhero comics? Why should other companies be allowed to come along afterwards and ride on the coat tails of the Big 2's hard work and success?

As I understand it, Apple Computers had to make an arrangement with Apple Music (the guys who released the Beatles albums) limiting which areas Apple Computers could use its trademark.
They're now in a bit of hot water for having gotten into iPods and iTunes, because those cross the lines they set those many years ago.

Here's another related item: inmates are claiming that their names are copyrighted, and filing liens against the folks who put them away (judges, prosecutors, even prison wardens) in whose documents their names appear, demanding use fees. One such joker demanded $500,000 per appearance of his name.

Apparently the intention is to ruin the credit ratings of the lien targets, with malice.

Fortunately, as soon as these get in front of a judge, they get thrown out, but I wouldn't put it past the credit agencies to overlook restoring someone's good name just because a fraud was perpetrated upon them.

More on topic, have the comics companies tried to extort extract money from The Rocky Horror Picture Show (for the song "Super Heroes")? It would be a good way to turn off a solid segment of its fan base, I would think. Or is it immune, having been published in 1975, and only new publications targetable?

Well, there's a very direct Wild Cards/DC connection in that Bob Wayne (of DC) is also a member of the Wild Cards Consortium. (He's the creator of Crypt Kicker.)

The word "superhero" is in particularly dubious trademark territory in that it is listed in the American Heritage Dictionary as a regular word, here: http://dictionary.reference.com/search?q=superhero

with this definition:

A figure, especially in a comic strip or cartoon, endowed with superhuman powers and usually portrayed as fighting evil or crime.

Insomuch as the trademarking goes, I'd put the word in the same boat as "marvel" or "harlequin," which are perfectly legitimate English words, but trademarks in their individual fields.

If I were to publish a comic and call it MARVEL, THE AC/DC HARLEQUIN SUPERHERO! there'd be some serious trademark confusion going on there. (Not to mention a comic about a transgendered polysexual superpowered heavy metal comedia del arte character, but I digress....)

Captain Marvel once kicked the snot out of Dr. Silvania after he copyrighted the alphabet and started demanding royalty payments from just about everyone.
^_^ Reminds me of the episode in the old Batman live-action series where Batman took on the evils of pyramid scams... That episode saved me from getting in legal trouble, as my mailman was trying to get me in on a scheme. (Yes, he was eventually caught and had to pay large fines)